Supreme Court Rocks the Trademark Office in ‘Slants’ Case

By: Armen N. Nercessian & Matthew B. Becker & Eric Ball

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

“Let the Right One In”

Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) 

Trademark law in the United States is rooted in common law, with individuals and entities earning trademark protection under state law through the use of their marks in commerce, without the need for registration. In 1946, Congress harmonized trademark law throughout the United States by passing the Lanham Act, which granted federal, nationwide trademark protection on top of existing state-based rights, if the trademark owner applied for and obtained a federal registration for its mark.

Section 2(a) of the Lanham Act states in relevant part that the U.S. Patent and Trademark Office may prohibit the registration of marks that may “disparage… or bring… into contempt, or disrepute” any “persons, living or dead, institutions, beliefs or national symbols.” Section 2(a) has been the subject of controversy and lawsuits in recent years. In 2014, the Trademark Office used Section 2(a) to cancel federal trademark registrations in six marks for a Washington football team, finding that the REDSKINS mark disparaged Native Americans. On appeal, the Fourth Circuit stayed the matter pending the Supreme Court’s resolution of the Tam case. Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D.Va. 2015), appeal docketed, No. 15-1874 (4th Cir. Aug. 6, 2015).

“The Band Who Must Not Be Named [or Registered]”

Background on the THE SLANTS decisions

In 2006, Simon Shiao Tam founded the all-Asian American dance-rock band “The Slants,” and several years later he applied to federally register THE SLANTS as a trademark for his band with the Trademark Office in 2011. The Trademark Office denied Mr. Tam’s registration application under Section 2(a), finding that the mark THE SLANTS as used for an all-Asian rock band would disparage a substantial composite of persons of Asian descent. The Trademark Office’s determination was affirmed on appeal before the Trademark Trial and Appeal Board, even though Mr. Tam defended his band’s use of the name, stating that his intention was not to disparage Asians but to reclaim and take ownership of that term. Mr. Tam then appealed this determination to the Federal Circuit.

The initial panel of the Federal Circuit affirmed the TTAB’s decision to refuse Mr. Tam’s federal registration. In re Simon Shiao Tam, 785 F.3d 567 (Fed. Cir. 2015). But one of the panelists, Judge Kimberly Ann Moore, wrote separately to make the case that Section 2(a)’s prohibition on disparaging registrations was unconstitutional. The Federal Circuit then granted en banc review on the question of Section 2(a)’s constitutionality. Sitting en banc, the Federal Circuit held by a 9-3 majority that prohibiting the federal registration of disparaging marks violates the First Amendment. In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc).

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